_____________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________
CASE NO. 10–1174
_____________________________________________________________________________________
IN THE
Supreme Court of the United States
OCTOBER TERM, 2010
_____________________________________________________________________________________
RUNAWAY SCRAPE, L.P.,
Petitioner,
v.
CHATNOIR, INC.,
Respondent.
_____________________________________________________________________________________
ON WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS FOR THE FOURTEENTH CIRCUIT
BRIEF FOR PETITIONER
Team Number 75
QUESTIONS PRESENTED
I.
Is Chatnoir, Inc. liable for contributory copyright infringement
under the standard announced in Metro-Goldwyn-Mayer Studios, Inc. v.
Grokster,
Ltd.,
where
Chatnoir
advertised
its
software
as
being
capable of making MP3 recordings of VuToob videos, failed to implement
filtering tools to prevent infringement, and gained customers from the
release of its free software?
II.
Is the domain name ―www.aardvarks.com,‖ registered by Runaway
Scrape, L.P., sufficiently dissimilar from Chatnoir, Inc‘s trademarks,
―Aardvark Media,‖ ―Aardvark Pro,‖ and ―Aardvark Lite,‖ to make it
unlikely that it will dilute Chatnoir‘s trademarks by blurring under
the Trademark Dilution Revision Act, 15 U.S.C. § 1125(c) (2006), where
Chatnoir‘s trademarks are not domain addresses; where they identify
different types of products; and where only 2% of the public associate
―www.aardvarks.com‖ with Chatnoir‘s software?
i
TABLE OF CONTENTS
QUESTIONS PRESENTED .................................................. i
TABLE OF AUTHORITIES ................................................ iv
OPINIONS BELOW ..................................................... vii
RELEVANT CONSTITUTIONAL AND STATUTORY PROVISIONS ................... vii
STATEMENT OF THE CASE ................................................ 1
SUMMARY OF THE ARGUMENT .............................................. 4
ARGUMENT ............................................................. 7
I. THE FOURTEENTH CIRCUIT‘S JUDGMENT SHOULD BE REVERSED BECAUSE
CHATNOIR IS LIABLE FOR CONTRIBUTORY COPYRIGHT INFRINGEMENT. ..... 7
1. This Court should adopt the standard for
contributory copyright infringement announced
in Perfect 10 v. Amazon.com. ................................ 9
A. Under the Perfect 10 test, Chatnoir is liable for
contributory copyright infringement. .................... 11
2. Even if this Court declines to adopt the Perfect 10 test,
Chatnoir is still liable under the Grokster test. .......... 14
A. Chatnoir‘s internal communications and advertisements
show that it intended to induce infringement. ........... 15
B. Chatnoir‘s failure to develop and implement filtering
tools show that it intended to induce infringement. ..... 17
C. Chatnoir‘s reliance on infringing activity for the
success of their business shows that it intended
to induce infringement. ................................. 19
II. THE FOURTEENTH CIRCUIT‘S JUDGMENT SHOULD ALSO BE REVERSED BECAUSE
RUNAWAY SCRAPE‘S TRADEMARK ―AARDVARKS.COM‖ DOES NOT DILUTE BY
BLURRING CHATNOIR‘S TRADEMARKS. ................................ 21
1. Under the first factor, Runaway Scrape‘s mark has a
low degree of similarity with Chatnoir‘s marks. ............ 23
A. TDRA‘s plain meaning changed dilution law, which the
Starbucks‘ test accounts for. ........................... 24
B. Runaway Scrape‘s mark has low degrees of similarity to
Chatnoir‘s marks in both contexts in which it appears. .. 26
i. In the website context, Runaway Scrape‘s
trademark has a low degree of similarity. ............ 27
ii
ii. In the domain address context, there is no
degree of similarity between the subject marks
because Chatnoir‘s marks are absent there. ........... 28
2. Under the second factor, Chatnoir‘s marks do not
have inherent distinctiveness, and have a low-degree
of acquired distinctiveness, lessening any
similarities between the subject marks. .................... 29
A. Chatnoir's marks are at best descriptive. ............... 30
B. Chatnoir's marks have a low degree
of secondary meaning. ................................... 31
3. The Fourth, Fifth and Sixth Factors favor Runaway Scrape,
outweighing the Third Factor, which favors Chatnoir. ....... 32
CONCLUSION .......................................................... 35
APPENDIX ........................................................... A-1
iii
TABLE OF AUTHORITIES
United States Supreme Court Cases:
Bethesda Hospital Assn. v. Bowen, 485 U.S. 399 (1988) ........... 24, 25
Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd.,
545 U.S. 913 (2005) ........................................... passim
Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003) ........ 21, 23
Sony Corp. v. Universal City Studios, 464 U.S. 417 (1984) ......... 7, 8
Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975) .......... 7
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) ........... 31
U.S. v. Donruss Co., 393 U.S. 297 (1969) ............................. 9
Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) .... 30
United States Courts of Appeals Cases:
A & M Records, Inc. v. Napster, 239 F.3d 1004 (9th Cir. 2001) ....... 11
Advertise.com v. AOL Advertising, Inc.,
616 F.3d 974 (9th Cir. 2010) ...................................... 31
Amazing Spaces, Inc. v. Metro Mini Storage,
608 F.3d 225 (5th Cir. 2010) ...................................... 29
Gershwin Publg. Corp. v. Columbia Artists Mgmt., Inc.,
443 F.2d 1159 (2d Cir. 1971) ................................... 7, 10
Horphag Research Ltd. v. Garcia, 475 F.3d 1029 (9th Cir. 2007) ...... 24
In re Aimster Copy. Litig., 334 F.3d 643 (7th Cir. 2003) ............ 10
Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2007) ....... 34
King of the Mt. Sports, Inc. v. Chrysler Corp.,
185 F.3d 1084 (10th Cir. 1999) .................................... 30
Louis Vuitton Malletier v. Haute Diggity Dogg, LLC,
507 F.3d 252 (4th Cir. 2007) ...................................... 22
Matthew Bender & Co. v. West Publg. Co.,
158 F.3d 693 (2d Cir. 1998) ....................................... 10
Mead Data C., Inc. v. Toyota Motor Sales,
875 F.2d 1026 (2d Cir. 1989) ...................................... 34
Panavision Intl., LP v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) ...... 28
Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146 (9th Cir. 2007) ................................. passim
Perfumebay.com Inc. v. eBay Inc.,
506 F.3d 1165 (9th Cir. 2007) ................................. passim
Playtex Prods., Inc. v. Georgia-Pac. Corp.,
390 F.3d 158 (2d Cir. 2004) ................................... 23, 24
St. Luke’s Cataract and Laser Inst., PA v. Sanderson,
573 F.3d 1186 (11th Cir. 2009) .................................... 31
iv
Savin Corp. v. Savin Group, 391 F.3d 439 (2d Cir. 2004) ............. 27
Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co.,
791 F.2d 423 (5th Cir. 1986) ...................................... 32
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.,
588 F.3d 97 (2d Cir. 2009) .................................... passim
Sunbeam Prods., Inc. v. W. Bend Co.,
123 F.2d 246, (5th Cir. 1997) ..................................... 31
TCPIP Holding Co., Inc. v. Haar Communs. Inc.,
244 F.3d 88 (2d Cir. 2001) .................................... 29, 31
Thane Intl., Inc. v. Trek Bicycle Corp.,
305 F.3d 894 (9th Cir. 2002) .................................. 23, 25
Ty. Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002) .................. 21
United Air Lines v. Civ. Aeronautics Bd.,
198 F.2d 100 (7th Cir. 1952) ...................................... 22
Visa Intl. Serv. Assn. v. JSL Corp.,
610 F.3d 1088 (9th Cir. 2010) ................................. 28, 29
United States District Courts Cases:
Arista Records LLC v. Lime Group LLC,
2010 WL 2291485 (S.D.N.Y. May 25, 2010) ....................... passim
Arista Records LLC v. Usenet.com, Inc.,
633 F. Supp. 2d 124 (S.D.N.Y. 2009) ............................... 16
Hackett v. Feeny, 2010 WL 1416870(D. Nev. April 1, 2010) ............ 12
IO Group, Inc. v. Veoh Networks, Inc.,
586 F. Supp. 2d 1132 (N.D. Cal. 2008) ............................. 12
Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd.,
454 F. Supp. 2d 966 (C.D. Cal. 2006) .............................. 18
Nike, Inc. v. Nikepal Intl., Inc.,
2007 U.S. Dist. LEXIS 66686 (E.D. Cal. Sept. 10, 2007) ............ 34
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.,
559 F. Supp. 2d 472 (S.D.N.Y. 2008) ............................... 33
Visa Intl. Serv. Assn. v. JSL Corp.,
590 F. Supp. 2d. 1306 (D. Nev. 2008) .......................... 25, 32
United States Trademark Trial and Appeal Board Case:
7-Eleven, Inc. v. Weschler, 2007 WL 1431084
(U.S. Trademark Tr. & App. Bd. May 15, 2007) ...................... 32
Constitutional and Statututory Provisions:
U.S. Const. Art. 1, § 8, cl. 8 ....................................... 7
v
15 U.S.C. § 1125 (2006) ......................................... passim
17 U.S.C. § 101 (2006) ............................................... 7
17 U.S.C. § 106 (2006) ............................................... 7
Legislative History:
H.R. Rpt. 109-23 (Mar. 17, 2005) ................................ 21, 26
Other Authorities:
Cass R. Sunstein, Interpreting Statutes in the Regulatory State,
103 Harv. L. Rev. 405 (1989) ...................................... 22
Jasmine Abdel-khalik, Is a Rose By Any Other Image Still a Rose?
Disconnecting Dilution’s Similarity Test from Traditional Trademark
Concepts, 39 U. Toledo L. Rev. 591 (2008) ..................... 26, 35
Lorie Graham & Stephen McJohn, Indigenous People and Intellectual
Property, 19 Wash. U. J.L. & Policy 313 (2005) .................... 25
Restatement (Second) of Torts § 8a cmt. b (1965) ..................... 9
vi
OPINIONS BELOW
The
decision
of
the
Fourteenth
Circuit
Court
of
Appeals
is
unpublished and appears in the record at pages 3 through 20. The Order
Granting Writ of Certiorari appears in the record at page 2.
RELEVANT CONSTITUTIONAL AND STATUTORY PROVISIONS
Article 1, Section 8, Clause 8 of the United States Constitution
authorizes Congress: ―[t]o promote the Progress of Science and useful
Arts, by securing for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and Discoveries.‖
The
relevant
copyright
statute
included
in
this
brief
is
17
U.S.C. § 106 (2006), set forth in the Appendix at page A-1. The
relevant trademark statute included in this brief is 15 U.S.C. § 1125
(2006), set forth in the Appendix at pages A-1 to A-2.
vii
STATEMENT OF THE CASE
Petitioner Runaway Scrape, L.P. (―Runaway Scrape‖) is a musical
group founded in 1999. R. 6. Its members formed a Limited Partnership,
under which they record, license, and distribute their music. R. 6, n.
1. The band has enjoyed growing success since its formation, making a
niche as an independent music band. R. 6. Respondent Chatnoir Inc.
(―Chatnoir‖)
is
an
electronics
and
communications
company
that
specializes in videoconferencing software. R. 3. Chatnoir introduced
internet-based videoconferencing software in 2003 with the federally
registered trademark ―Aardvark Media.‖ R. 3.
Aardvark Media streams
live video and audio over the internet and allows users with a camera
and microphone to communicate over the internet. R. 3.
Spurred by customer feedback, Chatnoir developed a new version of
its
software,
Aardvark
Pro
(―Pro‖),
which
allows
users
in
low-
bandwidth locations to strip a videoconference of the video while
still streaming the audio. R. at 4. This software also allows users to
record the audio only and store it as an MP3 file. R. 3.
Before
launching
Pro,
Chatnoir
tested
the
new
features
with
software named Aardvark Lite (―Lite‖), which allowed users to strip
the video portion of an online video and store only the audio portion
on their computers. R. 3. Chatnoir made Lite available on its website,
chatnoir.com, where its products are offered for sale. R. 5. Users
could download Lite for free on the website for a period of six
months. R. 5.
1
The webpage where users could
download
Lite
contained three
statements: ―(1) instructions for using the software, (2) a disclaimer
stating
‗please
don‘t
use
our
product
for
illegal
or
unethical
purposes,‘ and (3) suggested uses of the software,‖ which included
making ―audio recordings of . . . favorite VuToob videos.‖ R. 5.
VuToob is a website where users upload videos that anyone on the
internet can view. R. 5. Although VuToob tries to regulate uploaded
material, many users still upload copyright-infringing material. R. 5.
Specifically, VuToob users have uploaded pirated copies of copyrightprotected Runaway Scrape music videos, concert videos and user-made
videos that display images while a song plays. R. 6.
Chatnoir internal emails revealed that Chatnoir was aware of the
potential for infringement with using Lite on VuToob, but did not act
because Lite would cease to function after a limited time and VuToob
policed its website for copyright infringement. R. 7.
Chatnoir advertised Lite in several ways. First,
it notified
existing customers that Lite ―could be used to strip video and store
sound
from
advertising
searches
VuToob
through
resulted
―downloads,‖
videos.‖
and
R.
internet
in
an
―music‖
6.
search
Additionally,
engines,
advertisement
were
among
for
the
Chatnoir
―whereby
Lite.‖
search
R.
purchased
certain
6.
terms
user
―VuToob,‖
Chatnoir
purchased. R. 6.
In November 2006, Runaway Scrape learned of the Lite software. R.
6. Over the next three months, Runaway Scrape sent three letters to
Chatnoir, asking it to police the use of Lite to prevent copyright
2
infringement. R. 6. Chatnoir did not respond to the letters. R. 6-7.
In February and March 2007, Runaway Scrape sent Chatnoir cease and
desist
letters,
―overwhelmingly‖
notifying
using
Lite
Chatnoir
for
that
infringing
its
users
purposes.
R.
were
7.
Again,
Chatnoir failed to respond. R. 7.
One month later, Runaway Scrape launched www.aardvarks.com, a
website to promote their song titled ―Aardvarks.‖ R. 7. There, viewers
can download that song and access the band‘s website through a link
that read ―Get it the right way.‖ R. 7. Chatnoir sent Runaway Scrape
two letters demanding that the band either take down the website or
transfer the domain name to Chatnoir. R. 7.
Subsequently,
copyright
Runaway
infringement,
Scrape
alleging
sued
its
Chatnoir
promotion
for
and
contributory
distribution
of
Lite intentionally encouraged copyright infringement. R. 7-8. Chatnoir
countersued,
alleging
―Runaway
Scrape‘s
use
of
the
domain
name
www.aardvarks.com diluted Chatnoir‘s trademark by blurring.‖ R. 8.
At
third
trial,
parties
Runaway
were
Scrape
using
Lite
presented
to
make
uncontested
unauthorized
evidence
copies
of
that
its
music. R. 8. Experts from both sides testified that approximately
seventy percent of Lite users were infringing. R. 8. Further, Chatnoir
presented evidence of an uncontested survey in which two percent of
the public stated that the domain name www.aardvarks.com brought to
mind Chatnoir‘s Aardvark Media, Pro, and Lite. R. 8. Eight percent of
Chatnoir‘s current customers responded similarly. R. 8.
3
Chatnoir‘s President and CEO Stanley Rocker testified that he
―was surprised by the number of users downloading‖ Lite, which ―far
exceeded‖ the number of anticipated Pro users. R. 8. Mr. Rocker‘s
Executive Secretary, Kasey Stinger, also testified. Before Ms. Stinger
was terminated in 2005 1 , she recorded a business meeting with Mr.
Rocker. R. 9. In the conversation, which was played in court, Mr.
Rocker commented on Runaway Scrape‘s cease and desist letters:
Ha! Those fools. A successful release of Lite will more
than pay for a copyright infringement lawsuit. Heck a
lawsuit brought by a popular band would be great publicity
for the success of all the Aardvark products. . . . Lite is
going to provide us with a demographic we never would have
reached otherwise!
R. 9. The trial court ruled in favor of Chatnoir on the copyright
infringement
claim
and
the
trademark
dilution
claim.
R.
9.
The
Fourteenth Circuit affirmed the judgment of the trial court. R. 15.
It
held
that
Chatnoir
did
infringement.
under
not
R.
12.
Metro-Goldwyn-Mayer
intentionally
The
court
Studios,
induce
further
or
held,
Inc.
v.
encourage
based
on
Grokster,
copyright
the
Ninth
Circuit‘s jurisprudence, that Runaway Scrape‘s domain name was likely
to cause dilution by blurring. R. 15.
Runaway Scrape filed a petition for a writ of certiorari. This
Court granted it. Petitioners now request that this Court reverse the
decision of the Fourteenth Circuit Court of Appeals and remand for
further proceedings.
1
Ms. Stinger testified she was terminated after her romantic
relationship with Mr. Rocker became known at the company.
4
SUMMARY OF THE ARGUMENT
I.
The
Fourteenth
Circuit‘s
judgment
with
respect
to
the
contributory copyright infringement issue should be reversed for two
reasons. First, the court should have applied the Ninth Circuit‘s
test, set forth in Perfect 10 v. Amazon.com, whereby a defendant is
contributorily liable if it has knowledge that infringing material is
available using its system, can take simple measure to prevent further
infringement, but continues to provide access to the material. This is
the appropriate test to apply because the long-standing principle of
imputed intent can be logically extended to copyright law and this
test best protects the rights of copyright holders. Under this test,
Chatnoir
is
liable
because
it
was
notified
it
of
its
users‘
infringement; it failed to implement any filtering tools to prevent
infringement;
and
it
continued
to
provide
access
to
the
software
because it was beneficial to their business.
Second, the Fourteenth Circuit misapplied the test they did use,
the test set forth in Metro-Goldwyn-Mayer Studios v. Grokster. Under
Grokster, the defendant must have shown a clear expression or taken
affirmative
steps
to
foster
infringement.
In
the
instant
case,
Chatnoir has taken such affirmative steps. First, both its internal
communications and advertisements show that they desired to attract
customers
with
a
mind
to
infringe.
Second,
Chatnoir
failed
to
implement any filtering tools. Third, Chatnoir‘s business benefited as
a result of the infringement.
5
Thus, this Court should adopt the test set forth in Perfect 10,
but even if this Court declines to do so, Chatnoir is still liable for
contributory copyright infringement under the standard announced in
Grokster.
II.
The
Fourteenth
Circuit‘s
judgment
regarding
the
trademark
dilution issue should be reversed because the Court improperly applied
relevant factors under the Trademark Dilution Revision Act (TDRA). For
the first factor, not only did it use the wrong test, it misapplied
that test in failing to consider contextual effects on the parties‘
trademarks
properly.
Second,
it
ignored
Chatnoir‘s
trademarks‘
low
degree of distinctiveness, which helps determine the degree to which a
trademark should be protected. In addition, although Chatnoir may use
its marks exclusively, they have low degrees of recognition by the
public, as demonstrated by empirical evidence and their short duration
of use. Moreover, Runaway Scrape did not intend to associate with
Chatnoir‘s marks because it did not intend to benefit commercially
from any association with those marks. Chatnoir does not stand to lose
profit by Runaway Scrape‘s trademark because it targets those who, by
their motivations to pirate music, never intended to purchase Aardvark
Pro. Finally, empirical evidence demonstrating low association between
the marks favors Runaway Scrape, especially when TDRA is construed
narrowly because of its special interest leanings.
6
ARGUMENT
I.
THE FOURTEENTH CIRCUIT’S JUDGMENT SHOULD BE REVERSED BECAUSE
CHATNOIR IS LIABLE FOR CONTRIBUTORY COPYRIGHT INFRINGEMENT.
The desire to protect and reward creators of original works dates
back to the Constitution. U.S. Const. Art. I, § 8, cl. 8 (empowering
Congress
to
enact
legislation
to
secure
the
exclusive
rights
of
authors and inventors in their works.) Since the enactment of the
first Copyright Act in 1790, the main goals of United States copyright
law have been to reward creators for their labor and to serve the
public good by encouraging the production of original work. Twentieth
Century Music Corp. v. Aiken, 422 U.S. 151, 157 (1975).
In
1976,
Congress
enacted
the
most
recent
version
of
the
Copyright Act, which grants the owner of an original work the sole
right to use and authorize use of that work. 17 U.S.C. § 101 et. seq.
(2006). Section 106 of the Copyright Act, set forth in its entirety in
the Appendix, lists the actions which the owner of a copyright has the
exclusive
rights
to
do
and
to
authorize,
including
reproducing,
distributing and performing the copyrighted work. 17 U.S.C. § 106.
The Copyright Act holds accountable any person who infringes a
copyright. Gershwin Publg. Corp. v. Columbia Artists Mgmt., Inc., 443
F.2d 1159, 1161 (2d Cir. 1971). The Act has long been held to impose
liability not only on the actual infringer, but also on one ―who has
promoted or induced the infringing acts.‖ Id. at 1162. This ―vicarious
liability‖ was initially based on the agency doctrine of respondeat
superior, but has since been expanded beyond the employer-employee
relationship. Id. This Court held, in Sony Corp. v. Universal City
7
Studios, 464 U.S. 417, 486 (1984), and again in Metro-Goldwyn-Mayer
Studios, Inc. v. Grokster, Ltd., that secondary liability in the area
of copyright is ―well established in the law.‖ 545 U.S. 913, 930
(2005) (citing Sony, 464 U.S. at 486).
This Court in
secondary
Grokster articulated an ―inducement
copyright
contributorily
by
infringement.‖
545
liability
under
intentionally
U.S.
at
which
inducing
930.
This
or
Court
theory‖ of
―one
infringes
encouraging
held
that
direct
―one
who
distributes a device with the object of promoting its use to infringe
copyright, as shown by a clear expression or other affirmative steps
taken to foster infringement, is liable for the resulting acts of
infringement by third parties.‖ Id. at 936-37.
The Ninth Circuit interpreted the Grokster inducement theory of
liability to include situations where an actor ―knowingly takes steps
that
are
substantially
certain
to
result
in
direct
infringement.‖
Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1171 (9th Cir.
2007). In so doing, the court relied on this Court‘s statement in
Grokster which directed courts to analyze contributory liability in
light of the ―rules of fault-based-liability derived from the common
law.‖ Id. at 1170 (citing Grokster, 545 U.S. at 934-45). The Ninth
Circuit reasoned that under the common law intent may be imputed;
thus, intent in contributory copyright liability may also be imputed.
Id. at 1171.
8
1. This Court should adopt the standard for contributory copyright
infringement announced in Perfect 10 v. Amazon.com.
Under the contributory liability test set forth in Perfect 10,
the plaintiff must show that the defendant (1) had actual knowledge
that specific infringing material was available using its system; (2)
could
have
copyrighted
taken
works;
simple
and
measures
(3)
to
continued
prevent
to
further
provide
damage
access
to
to
the
infringing works. 508 F.3d at 1172.
This Court should adopt this test for several reasons. First,
this Court stated in Grokster that it has never meant to ―foreclose
rules of fault-based liability derived from the common law.‖ 545 U.S.
at 934-35. Under common law theories of tort liability, intent may be
imputed.
Perfect 10, 508 F.3d at 1146.
If an actor knows that the
consequences of his actions ―are certain, or substantially certain, to
result from his act, and still goes ahead, he is treated by the law as
if he had in fact desired to produce the result.‖ Restatement (Second)
of Torts § 8a cmt. b (1965). This Court has long recognized the
concept of imputed intent. See U.S. v. Donruss Co., 393 U.S. 297, 311
(1969) (Harlan, J., concurring). In Donruss, Justice Harlan stated ―in
everyday speech, we commonly say that a person has a ‗purpose‘ to do
something when he acts with knowledge that the thing will inevitably
result.‖ Id. He stated that there is ample legal authority ―for the
proposition that an actor will be deemed to have an intention to cause
consequences of an act if the actor believes that the consequences are
substantially certain to result from the act.‖ 393 U.S. at 311 (citing
Restatement (Second) of Torts § 8(a)) (internal quotations omitted).
9
Thus, imputed intent is a long standing principle under the wellestablished common law theories of tort law, as recognized by this
Court.
Second, lower courts have applied the theory of imputed intent
beyond general tort liability to contributory copyright infringement.
Just as the Ninth Circuit held that intent in contributory copyright
infringement may be imputed in Perfect 10, so too did the Seventh
Circuit in In re Aimster Copy. Litig., 334 F.3d 643, 650 (7th Cir.
2003). The Aimster Court held that ―willful blindness is knowledge, in
copyright law (where indeed it may be enough that the defendant should
have
known
of
the
direct
infringement),
as
it
is
in
the
law
generally.‖ Id. (internal citations omitted). Similarly, the Second
Circuit held that a defendant may be held liable for contributory
copyright infringement if, ―‗with knowledge of infringing activity,‘‖
it ―‗materially contributes to the infringing conduct of another.‘‖
Matthew Bender & Co. v. West Publg. Co., 158 F.3d 693, 706 (2d Cir.
1998) (quoting Gershwin, 443 F.2d at 1162).
Third, this test best protects the rights of copyright holders in
an era of mass infringement on the internet. Perfect 10, 508 F.3d at
1172. This Court in Grokster even acknowledged that ―the argument for
imposing indirect liability . . . is a powerful one, given the number
of infringing downloads that occur every day.‖ 545 U.S. at 929. The
Perfect 10 Court emphasized that ―copyright holders cannot protect
their rights in a meaningful way unless they can hold providers of
such services or products accountable for their actions.‖ 508 F.3d at
10
1172.
The court stated that the most effective way to accomplish this
was pursuant to a test that held a computer system operator liable
where the operator ―learns of specific infringing material available
on his system and fails to purge such materials from the system.‖
Id.
at 1171 (citing A & M Records, Inc. v. Napster, 239 F.3d 1004, 1021
(9th
Cir.
2001)).
When
a
company
knows
of
the
availability
of
infringing music files, assists users in accessing such files, and
fails
to
block
access
to
such
files,
that
company
has
materially
contributed to infringement. Id. (citing Napster, 239 F.3d at 1022).
Holding
illegal
otherwise
copyright
would
allow
companies
infringement
with
to
knowingly
impunity
facilitate
simply
because
facilitating that infringement was not their main goal. Id. at 1172.
A. Under the Perfect 10 test, Chatnoir is liable for contributory
copyright infringement.
Under the Perfect 10 test, the plaintiff must first establish
that there has been direct infringement by third parties.
1169.
508 F.3d at
In the instant case, Respondent concedes that this element has
been established because third parties used Aardvark Lite (―Lite‖)
software to make unauthorized copies of Runaway Scrape‘s music. R. 8.
Next, under the Perfect 10 test, a defendant is liable if it (1)
has actual knowledge that specific infringing material is available
using its system; (2) can take simple measures to prevent further
damage to copyright works; and (3) continues to provide access to the
infringing works. 508 F.3d at 1172.
Under the first factor, it is clear that Chatnoir had actual
knowledge of specific infringing material that was available using its
11
system. Courts have held that when a plaintiff notifies a defendant of
third
party
infringement,
that
notification
is
probative
of
the
defendant‘s knowledge of infringing activity. See Hackett v. Feeny,
2010 WL 1416870 at *4 (D. Nev. April 1, 2010); IO Group, Inc. v. Veoh
Networks, Inc., 586 F. Supp. 2d 1132, 1148 (N.D. Cal. 2008).
From
November 2006 to January 2007, Runaway Scrape sent three letters to
Chatnoir regarding its concerns that Lite would be used to facilitate
copyright
infringement.
R.
6.
Chatnoir
did
not
respond
to
these
letters. R. 6-7. After the official launch of Lite, Runaway Scrape
sent two cease and desist letters to Chatnoir in February and March,
2007, informing Chatnoir that its users were overwhelmingly using the
software to make unauthorized MP3 copies of Runaway Scrape‘s material
appearing on VuToob. R. 7. Again, Chatnoir did not respond to the
letters. R. 7.
At trial, a former employee of Chatnoir, Kasey Stinger, testified
that Stanley Rocker, the President and CEO of Chatnoir, had been aware
of the cease and desist letters. R. 9. In response to the letters,
Rocker brazenly stated that ―a successful release of Lite will more
than pay for a copyright infringement lawsuit.‖
R. 9. He went on to
say that ―a lawsuit brought by a popular ban would be great publicity
for the success of all the Aardvark products.‖
R. 9. Therefore, it is
clear
10
that
the
first
factor
of
the
Perfect
test
is
satisfied
because Chatnoir had actual knowledge that its system was being used
to infringe specific copyrighted material.
12
The second factor of the Perfect 10 test, whether the defendant
could
have
taken
simple
measures
to
prevent
further
damage
to
copyrighted works, is also satisfied. See 508 F.3d at 1172. Internal
emails show that Chatnoir was aware that filtering tools would allow
Lite to filter out potentially infringing material, but declined to
use such tools. R. 11.
Instead, Chatnoir chose to rely on VuToob‘s
filtering tools. R. 11. This reliance was unfounded for two reasons.
First, this Court in Grokster rejected the theory that software owners
do not have a duty to monitor its own users‘ activity. 545 U.S. at
939. Second, although VuToob attempted to regulate uploaded material
on
its
website,
―many
users
also
upload
copyright-infringing
material.‖ R. 5 (emphasis added). Thus, Chatnoir cannot rely solely on
VuToob‘s imperfect monitoring mechanisms and disclaim all liability
for its users‘ infringement.
Although
there
were
potentially
many
means
for
Chatnoir
to
install filtering mechanisms on their software 2 , the clearest solution
would have been to not allow Lite to be used with VuToob at all.
Experts estimated that roughly seventy percent of
Lite users were
infringing. R. 8. By simply prohibiting users of Lite to access and
strip videos from VuToob, Chatnoir would have prevented a substantial
amount of copyright infringement. Chatnoir, however, chose not to take
simple measures to prevent such infringement. R. 11.
2
One such filtering mechanism is called ―hash-based filtering,‖ which
identifies a digital file that contains copyrighted content, and blocks a
user from downloading the file. Arista Records LLC v. Lime Group LLC, 2010
WL 2291485 at *19 (S.D.N.Y. May 25, 2010). Other such filtering mechanisms
include acoustic finger-printing and filtering based on digital metadata.
Id.
13
The
third
and
final
factor,
that
the
defendant
continued
to
provide access to the infringing works, has also been satisfied here.
After
receiving
notice
that
people
were
using
Lite
for
copyright
infringement, Chatnoir continued to provide access to the software. R.
7. They did so because allowing users of Lite to strip videos from
VuToob substantially increased Chatnoir‘s customer base. R. 8. Mr.
Rocker testified at trial that the number of downloads of Lite ―far
exceeded
the
number
of
its
anticipated
future
users
of
the
full
Aardvark Pro software package.‖ R. 8. Thus, although Chatnoir knew of
its users‘ infringement and could have taken simple measure to stop
it, it chose to continue to offer Lite simply because it boosted its
bottom line.
Therefore, under the test set forth in Perfect 10, Chatnoir is
liable
for
contributory
copyright
infringement
because
(1)
it
had
actual knowledge that specific infringing material was available using
its system; (2) it could have taken simple measures to prevent further
damage to copyrighted works; but instead, (3) it chose to continue to
provide access to copyrighted works, knowing that doing so facilitated
copyright infringement.
2.
Even if this Court declines to adopt the Perfect
Chatnoir is still liable under the Grokster test.
This Court
secondary
in
Grokster articulated an ―inducement
copyright
contributorily
by
infringement.‖
545
liability
under
intentionally
U.S.
at
inducing
930.
In
which
or
Grokster,
―one
10
test,
theory‖ of
infringes
encouraging
direct
copyright
holders
brought a copyright infringement action against distributors of peer14
to-peer file sharing software. Id. at 919. The distributors, Grokster,
Ltd. and StreamCast Networks, Inc., distributed free software products
that
allowed
computer
users
to
share
electronic
files.
Id.
The
networks could be used to share any type of digital files, but were
predominantly
without
used
for
authorization.
sharing
Id.
at
copyrighted
920.
A
music
group
of
and
video
copyright
files
holders,
including motion picture studios and songwriters, sued Grokster and
StreamCast for their users‘ copyright infringements. Id.
In assessing secondary liability for copyright infringement, this
Court held that ―one who distributes a device with the object of
promoting
its
use
to
infringe
copyright,
as
shown
by
a
clear
expression or other affirmative steps taken to foster infringement, is
liable for the resulting acts of infringement by third parties.‖ Id.
at 936-37.
This Court identified three types of evidence, considered in the
context of the record as a whole, that support a finding that a
defendant intended to induce infringement: (1) defendant‘s internal
communications
develop
and
and
advertising
implement
efforts;
filtering
tools
(2)
or
defendant‘s
other
means
failure
of
to
limiting
infringement; and (3) defendant‘s reliance on infringing activity for
the success of its business. Id. at 938-39.
A.
Chatnoir’s internal communications and advertisements
that it intended to induce infringement.
show
The first type of evidence that this Court found to be decisive
in
determining
whether
the
defendant
had
an
intention
to
induce
infringement was evidence of defendant‘s internal communications and
15
advertising efforts.
Id. at 939. In Grokster, this Court found it
relevant that defendant StreamCast‘s internal communications revealed
that it was attempting to attract users who had formally used another
program, Napster, for copyright infringement. Id. Further, this Court
noted that StreamCast advertised their program as an alternative to
Napster. Id.
Other cases have elaborated on this first factor. See generally
Lime Group, 2010 WL 2291485; Arista Records LLC v. Usenet.com, Inc.,
633 F. Supp. 2d 124 (S.D.N.Y. 2009). The court in Lime Group found
that LimeWire, the operator of a file-sharing program, had engaged in
inducement of copyright infringement under Grokster. 2010 WL 2291485
at *21. In analyzing the ―internal communications‖ prong of the first
Grokster
factor,
the
memoranda,
LimeWire
downloaded
copyrighted
Lime
Group
employees
Court
discussed
material
through
noted
the
that
fact
its
in
that
program.
internal
its
Id.
users
at
*16.
Similarly, in the instant case, an internal communication between Mr.
Rocker, and his Executive Secretary, Kasey Stinger, revealed that Mr.
Rocker knew of infringing activity by Lite users. R. 9. He found that
activity
to
be
favorable
for
the
company
because
a
copyright
infringement lawsuit ―would be great publicity for the success of all
the Aardvark products.‖ R. 9.
In
factor,
analyzing
the
Lime
the
Group
―advertising‖
court
found
prong
it
of
relevant
the
first
that
Grokster
LimeWire
had
conducted a marketing campaign through Google AdWords. 2010 WL 2291485
at *17. AdWords allows a company to purchase certain search terms, so
16
that when a person ―Googles‖ that term, an advertisement for their
company
appears.
download,‖
and
Id.
LimeWire
other
similar
purchased
phrases.
―napster
Id.
mp3,‖
Chatnoir
―mp3
engaged
free
in
a
similar marketing campaign to advertise Lite. R. 6. Chatnoir purchased
advertising
―VuToob,‖
through
internet
―downloads‖
and
search
―music,‖
engines
among
using
others.
the
R.
phrases
6.
People
searching for those words would be directed to an advertisement for
Lite.
R.
6.
Chatnoir
also
advertised
its
new
software
by
sending
emails to its current customers, touting that they could use Lite to
―strip video and store sound from VuToob videos.‖ R. 6.
Thus, Chatnoir, through its advertising and marketing plan, made
it clear to the public that its products could be used to make sound
recordings
from
communications
infringement
VuToob‘s
show
that
because
the
videos.
Moreover,
Chatnoir
resulting
Chatnoir‘s
encouraged
publicity
illegal
would
be
internal
copyright
good
for
Chatnoir‘s business.
B. Chatnoir’s failure to develop and implement filtering tools
show that it intended to induce infringement.
The second type of evidence that the Grokster Court found to be
critical
in
defendant‘s
the
use
intentional
of
filtering
inducement
inquiry
tools
other
and
was
evidence
methods
to
of
reduce
infringement. 545 U.S. at 939. This Court held that failure to utilize
existing technology to create meaningful barriers against infringement
is
a
strong
indicator
of
intent
to
foster
infringement.
Id.
This
factor is nearly identical to the second factor in the Perfect 10
test.
See
508
F.3d
at
1172.
As
17
noted
in
the
previous
analysis,
Chatnoir considered installing filtering tools on its software, but
declined to do so, improperly relying on VuToob to filter for them. R.
11. In analyzing the second Grokster factor, the Lime Group Court held
that
considering,
but
ultimately
failing
to
implement
filtering
mechanisms weighed against defendant LimeWire. 2010 WL 2291485 at *20.
The Lime Group Court further noted that the only step LimeWire
had taken to address infringement was to post an electronic notice on
its website. Id. The notice stated that the LimeWire programs were for
sharing authorized files only and required a user to ―agree‖ with a
statement
that
infringement‖.
said:
Id.
―I
will
not
use
LimeWire
Similarly,
the
only
step
for
copyright
Chatnoir
took
to
discourage illegal copyright infringement was a statement on the Lite
webpage
that
said
―please
don‘t
use
our
product
for
illegal
or
unethical purposes.‖ R. 5. That statement, however, does not explain
which
illegal
or
unethical
purposes
the
user
should
avoid.
R.
5.
Further, the statement is essentially counter-acted by the statement
immediately proceeding that statement, which suggests that Lite users
―make audio recordings of [their] favorite VuToob videos.‖ R. 5.
―Although [defendant] is not required to prevent all the harm
that is facilitated by the technology, it must at least make a good
faith attempt to mitigate the massive infringement facilitated by its
technology.‖ Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 454
F. Supp. 2d 966, 989 (C.D. Cal. 2006). Chatnoir has made no effort at
all, let alone a good faith attempt, to mitigate the infringement
facilitated by Lite. As previously established, Chatnoir could have
18
used a number of simple filtering mechanisms, or simply disallowed
access
to
VuToob.
Instead,
Chatnoir
chose
to
allow
its
users
to
continue their illegal infringement.
C. Chatnoir’s reliance on infringing activity for the success of
its business shows that it intended to induce infringement.
The final type of evidence that the Grokster Court found to be
important in determining whether the defendant had an intention to
induce infringement was evidence of defendant‘s reliance on infringing
activities
for
the
success
of
its
business.
545
U.S.
at
939.
In
finding an unlawful objective on behalf of Grokster and StreamCast,
this
Court
noted
that
both
defendants
made
money
by
selling
advertising space for ads that would be seen by people using their
software. 545 U.S. at 939-40. Although Chatnoir did not financially
benefit in the same manner as the defendants in Grokster, it benefited
financially nonetheless. Chatnoir‘s marketing strategy was to offer
Lite
for
free
in
order
to
promote
the
upcoming
version
of
the
software, Aardvark Pro (―Pro‖). R. 4. Thus, the amount of money they
made from the release and sale of Pro was at least in part based on
getting users to try Lite. This strategy is not entirely different
from
how
LimeWire
the
work.
peer-to-peer
See
Lime
networks
Group,
2010
such
WL
as
Kazaa,
2291485
at
Morpheus
*2.
and
LimeWire
initially offered a free version of their software to users and later
began selling LimeWire Pro, ―an upgraded version of LimeWire‖ that was
available for purchase. Id. at *19. The court in Lime Group found this
evidence to ―support a finding that [LimeWire] intended to induce
infringement.‖
Id.
19
Chatnoir‘s
massive
user
features.‖
business
success
population
See
id.
Lite
depended
generated
attracted
by
a
on
its
Lite
attracting
―a
infringement-enabling
substantial
number
of
users,
seventy percent of whom were using the program for illegal copyright
infringement. R. 8. Because Chatnoir‘s plan was to use Lite to promote
the sale of Pro, Chatnoir clearly relied on the infringing activity of
its users to promote its business.
Therefore, Runaway Scrape has demonstrated that all three types
of evidence that support a finding that Chatnoir intended to induce
infringement
are
present
in
the
instant
case.
First
Chatnoir‘s
internal communications and advertising efforts show that it intended
to induce infringement by attracting customers who wanted to make mp3
recordings from VuToob videos. Second, Chatnoir failed to develop and
implement any filtering tools to limit infringement. Third, Chatnoir
relied on the infringing activity for the success of its business –
both in attracting customers to buy Pro and in generating publicity
for the company.
Chatnoir
should
be
held
liable
for
contributory
copyright
infringement, either under the test set forth by the Ninth Circuit in
Perfect
10,
or
under
the
standard
articulated
by
this
Court
in
Grokster. This Court should adopt the Ninth Circuit test because this
Court
has
liability
long
and
contributory
recognized
should
copyright
the
extend
theory
that
infringement,
of
imputed
liability
as
other
in
intent
the
courts
in
tort
context
have
of
done.
Additionally, the Perfect 10 test best represents the interest of
20
copyright holders in this era of massive copyright infringement on the
internet.
However, even if this Court decides not to adopt the Ninth
Circuit‘s test, Chatnoir is still liable under the test announced in
Grokster. Thus, this Court should reverse the Fourteenth Circuit‘s
decision on this issue and remand for further proceedings.
II.
THE FOURTEENTH CIRCUIT’S JUDGMENT SHOULD ALSO BE REVERSED BECAUSE
RUNAWAY SCRAPE’S TRADEMARK “AARDVARKS.COM” DOES NOT DILUTE BY
BLURRING CHATNOIR’S TRADEMARKS.
This issue exemplifies the threat to marketplace competition by
companies
abusing
―blurring‖
cause
the
of
Trademark
action.
Dilution
―Blurring‖
Revision
is
a
Act‘s
form
of
(TDRA)
trademark
dilution. 15 U.S.C. § 1125(c)(1) (2006). It occurs when the owner of a
famous
trademark
3
(or
―senior
mark‖)
demonstrates
that
a
newer
trademark‘s (or ―junior mark‖) similarities to the senior mark are
―likely‖
because
to
―impair[]
consumers
§ 1125(c)(2)(B).
4
the
might
The
distinctiveness
associate
purpose
of
one
of
with
blurring
the
the
law
[senior]
other.
is
to
15
mark‖
U.S.C.
preserve
the
uniqueness of an owner‘s mark in the marketplace, H.R. Rpt. 109-23 at
4 (Mar. 17, 2005), so that consumers will easily recognize the source
of the mark, and the products it represents, see Ty. Inc. v. Perryman,
306 F.3d 509, 511 (7th Cir. 2002). But because TDRA protects private
interests
narrowly
3
4
(companies‘
to
prevent
trademarks),
its
abuse
this
by
Court
companies
should
seeking
construe
to
it
stifle
Runaway Scrape concedes that Chatnoir‘s marks are famous and that
its mark is used in commerce.
The TDRA overruled Moseley v. V Secret Catalogue, Inc., which held
that owners of senior marks had to prove ―actual dilution‖ to
prevail in a blurring cause of action under the Federal Trademark
Dilution Act of 1995 (FTDA). 537 U.S. 418, 432 (2003).
21
competition, which ultimately harms the public welfare. See United Air
Lines v. Civ. Aeronautics Bd., 198 F.2d 100, 107 (7th Cir. 1952); H.R.
Rpt. 109-23 at 25; Cass R. Sunstein, Interpreting Statutes in the
Regulatory State, 103 Harv. L. Rev. 405, 499 (1989).
While
similarity
impairment
consider
guidance,
of
a
―all
is
senior
relevant
crucial
mark‘s
blurring,
distinctiveness
factors.‖
§ 1125(c)(2)(B)
to
includes
whether
requires
15
U.S.C.
six
factors:
there
is
courts
to
§ 1125(c)(2)(B).
(1)
the
degree
For
of
similarity between the marks; (2) the degree of inherent or acquired
distinctiveness of the famous mark; (3) the extent to which the owner
of the famous mark is engaging in substantially or exclusive use of
the
mark;
(4)
the
degree
of
recognition
of
the
famous
mark;
(5)
whether the user of the mark or trade name intended to create an
association
with
the
famous
mark;
and
(6)
any
actual
association
between the mark or trade name and the famous mark. Id. at (i)-(vi).
These factors are ―non-exhaustive.‖ Starbucks Corp. v. Wolfe’s Borough
Coffee, Inc., 588 F.3d 97, 105 (2d Cir. 2009).
Depending on the facts
of a case, some factors have great weight and others do not. Louis
Vuitton Malletier v. Haute Diggity Dogg, LLC, 507 F.3d 252, 266 (4th
Cir. 2007). In addition, one factor‘s strength or weakness affects
considerations of other factors. Perfumebay.com Inc. v. eBay Inc., 506
F.3d 1165, 1174 (9th Cir. 2007).
The Fourteenth Circuit erred when it failed to consider context
properly.
and
the
There are two relevant contexts here, the website context
domain
address
context,
22
because
consumers
view
Runaway
Scrape‘s mark in these contexts only.
But the Fourteenth Circuit
focused only on the domain address context. R. 13-14.
In addition, it
misapplied a Ninth Circuit decision that relies on a test that is out
of date. Starbucks‘ approach is more suitable because it reflects
TDRA‘s language. Moreover, it ignored the second factor, which lowers
the similarity between the marks because Chatnoir‘s marks have a low
degree
of
distinctiveness.
While
the
third
factor
might
favor
Chatnoir, the fourth, fifth and sixth factors favor Runaway Scrape.
Therefore,
any
similarity
between
Runaway
Scrape‘s
and
Chatnoir‘s
marks is not likely to cause them to blur.
1. Under the first factor, Runaway Scrape’s mark has a low degree of
similarity with Chatnoir’s marks.
The
TDRA‘s
plain
meaning
altered
the
blurring
landscape
significantly. Before TDRA, the appeals courts used tests requiring
certain
levels
of
similarity
to
show
blurring.
See
e.g.
Playtex
Prods., Inc. v. Georgia-Pac. Corp., 390 F.3d 158, 167 (2d Cir. 2004);
Thane Intl., Inc. v. Trek Bicycle Corp., 305 F.3d 894, 906-07 (9th
Cir. 2002). These tests were used to find actual dilution, which this
Court
interpreted
FTDA
to
require.
Moseley,
537
U.S.
at
432.
But
TDRA‘s plain meaning overruled Moseley, abrogating these tests. The
Second
Circuit
in
Starbucks
changed
its
test
to
reflect
TDRA‘s
changes. The Ninth Circuit still clings to its pre-TDRA test that has
no statutory support. Consequently, the Fourteenth Circuit erred when
it followed a case applying that test.
While true to TDRA‘s plain meaning, Starbucks properly considered
context for TDRA‘s first factor. The first-factor analysis is ―fact23
intensive‖ and ―media-specific.‖ Horphag Research Ltd. v. Garcia, 475
F.3d 1029, 1036 (9th Cir. 2007). Context, therefore, is of the upmost
importance. The relevant contexts for the first factor are those in
which the junior and senior marks (―subject marks‖) appear in the
marketplace. Runaway Scrape‘s mark appears as a website and a domain
address. R. 7. To determine whether there is a likelihood of blurring,
this Court should examine the junior mark within those contexts. When
done so, Runaway Scrape‘s mark is minimally similar to Chatnoir‘s
marks.
A.
TDRA’s plain meaning changed
Starbucks’ test accounts for.
dilution
law,
which
the
To discern a statute‘s plain meaning, courts look to its language
and
design.
Bethesda
Hospital
Assn.
v.
Bowen,
485
U.S.
399,
405
(1988). In Bethesda, this Court held that an absence of statutory
language about certain procedures meant that those procedures were not
required for an administrative board to have jurisdiction. Id. at 40405.
Here,
Moseley
Starbucks
addressed
―likelihood
of
a
made
a
circuit
dilution‖
or
similar
split
interpretation.
over
―actual
whether
dilution.‖
Before
FTDA
537
TDRA,
required
U.S.
at
a
428.
Moseley resolved this by requiring actual dilution. Id. at 432. To
show actual dilution by blurring, the Second Circuit required that the
subject marks be ―substantially similar.‖ Playtex Prods., 390 F.3d at
167. In Starbucks, however, the Second Circuit focused on the ―degree‖
language of § 1125(c)(2)(B)‘s first factor. As the Bethesda Court used
an
absence
of
language
to
discern
a
statute‘s
plain
meaning,
the
Starbucks Court reasoned that the first factor‘s absence of ―‗very‘‖
24
or ―‗substantial‘‖ indicated that its ―substantial similarity‖ test
did not have textual support. Starbucks, 588 F.3d at 108.
In addition, the Starbucks Court concluded that § 1125(c)(2)(B)‘s
design also supported abandoning the test. In Bethesda, this Court
also looked at the statute‘s design. 485 U.S. at 405-07. Similarly,
the Starbucks Court looked at TDRA‘s other factors. 588 F.3d at 108.
Because of their existence, similarity is now one of many factors, and
does not always weigh more than others do. Id. at 109. It observed
that a standard requiring a certain level of similarity would render
the other factors meaningless. Id. In light of the ―degree‖ language
and the existence of other factors, the Second Circuit modified its
blurring test. Id.
The Fourteenth Circuit‘s first mistake was following the Ninth
Circuit because its approach is based on FTDA. See Thane, 305 F.3d at
906-07. It continues to apply the test without any support from TDRA‘s
plain meaning, Perfumebay.com, 506 F.3d at 1180-81, 1181 n. 9, causing
confusion. See Starbucks, 588 F.3d at 109, n.4; Visa Intl. Serv. Assn.
v. JSL Corp., 590 F. Supp. 2d. 1306, 1316 (D. Nev. 2008)(observing
that TDRA‘s first factor ―appear[s] to abrogate‖ the Ninth Circuit‘s
approach).
This
Court
can
alleviate
this
confusion
by
adopting
Starbucks‘ appropriate adherence to TDRA.
Following Starbucks will ensure TDRA, a special interest law, is
narrowly construed. TDRA represents an expansion of private interests,
see Lorie Graham & Stephen McJohn, Indigenous People and Intellectual
Property, 19 Wash. U. J.L. & Policy 313, 315-16 (2005), seeking to
25
prevent any chance of ―free rides‖ on senior marks, Thane, 305 F.3d at
904. TDRA‘s likelihood standard reflects companies‘ concern that if
one similar mark is allowed, many others will follow, suffering a
cumulative injury that ―whittl[es] away‖ their marks‘ distinctiveness.
Jasmine Abdel-khalik, Is a Rose By Any Other Image Still a Rose?
Disconnecting Dilution’s Similarity Test from Traditional Trademark
Concepts,
39
deliberations
U.
Toledo
described
L.
Rev.
TDRA‘s
591,
intent
592
to
(2008).
protect
Congressional
only
the
―most
famous‖ marks. H.R. Rpt. 129-23 at 25. Construing TDRA broadly permits
companies with marks of low degrees of distinctiveness to squash new
marks that are minimally similar. The case at bar is one in point.
Starbucks‘ abandonment of a requisite level of similarity acknowledges
that other factors are as important. Giving weight to them checks
against companies abusing TDRA because courts have to look at the
entire picture. By considering everything, only the most famous marks
will be protected, and abusive claims, like Chatnoir‘s, will fail.
B.
Runaway Scrape’s mark has low degrees of similarity
Chatnoir’s marks in both contexts in which it appears.
to
Blurring concerns the distinctiveness marks have in the eyes of
consumers.
Consumers
see
marks
only
in
contexts.
Therefore,
to
determine the impairment of a mark‘s distinctiveness, courts should
focus on the contexts in which subject marks appear. Perfumebay, 506
F.3d
at
1175.
Different
contexts
affect
marks‘
characteristics
differently, so that a junior mark can blur a senior mark in one
context, but not in another. Ultimately, ―it is the identity of the
marks themselves that is germane.‖ Savin Corp. v. Savin Group, 391
26
F.3d 439, 454 (2d Cir. 2004). Using common words or images might not
be enough in certain contexts, causing marks to blur. Id. In the case
at bar, Runaway Scrape‘s mark, ―www.aardvarks.com,‖ appears in the
website context, and the domain-address context. In the former, it has
a
low
degree
juxtaposed
to
of
similarity
the
products
to
it
Chatnoir‘s
marks
identifies.
In
the
because
it
is
domain-address
context, it has no similarity because Chatnoir‘s marks are absent.
i. In the website context, Runaway Scrape’s trademark has a
low degree of similarity.
When examining a trademark as a website, a court should consider
everything
that
a
consumer
would
see
on
the
website.
See
e.g.
Starbucks, 588 F.3d at 106; Savin, 391 F.3d at 454; Perfumebay.com,
506 F.3d at 1177. In Starbucks, the court observed other marks and
products on defendant‘s websites that were alongside the junior marks.
Id.
These other products were different from any that plaintiff sold,
and clearly identified with defendant. Id. The juxtaposition of the
junior mark with these products created a context that lessened the
similarity between them. Id. In the case at bar, the website context
similarly
affects
the
subject
marks.
Consumers
view
―www.aardvarks.com‖ along with its website. On that website, consumers
can download Runaway Scrape‘s song entitled ―Aardvarks.‖ R. 15. This
product is different from that which Chatnoir‘s marks identify, R. 3,
7,
and
www.aardvarks.com
is
juxtaposed
to
it.
In
Starbucks,
the
juxtaposition of the junior mark to types of products different from
plaintiff‘s products decreased their similarities, despite identifying
the
same
type
of
product.
Starbucks,
27
588
F.3d
at
106.
Here,
―www.aardvarks.com‖
identifies
a
different
type
product
from
Chatnoir‘s, and is juxtaposed to it. If subject marks that identify
the same type of product are minimally similar when accompanied by
other
products,
identify
a
different
fortiori,
types
they
of
are
minimally
products,
and
the
similar
when
junior
they
mark
is
juxtaposed to that different type of product.
ii. In the domain address context, there is no degree of
similarity between the subject marks because Chatnoir’s
marks are absent there.
In this context, companies use marks to help consumers find where
they can purchase products, not just products themselves. See Visa
Intl. Serv. Assn. v. JSL Corp., 610 F.3d 1088, 1091 (9th Cir. 2010);
Panavision Intl., LP v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998).
In
Visa,
defendant‘s
mark,
―evisa.com,‖
blurred
plaintiff‘s
mark,
―visa.com,‖ partly because they both identified where consumers could
find the respective parties‘ goods or services. 610 F.3d at 1091.
Here, however, only Runaway Scrape‘s mark is used for that purpose. R.
7.
Chatnoir
uses
―chatnoir.com‖
for
such
identification,
and
its
Aardvark marks to represent products found there. R. 5. The Aardvark
marks
simply
do
not
appear
to
consumers
as
domain
addresses;
therefore, there can be no degree of similarity in this context.
Assuming arguendo that both parties used their marks in this
capacity, there is a low degree of similarity between them. Context
strengthens or lessens marks‘ similarities. See Visa, 610 F.3d at
1090. In Visa, the court concluded that the prefix ―e‖ strengthened
the
similarity
to
―visa.com‖
because
the
mark
appeared
on
the
internet. Id. Consumers would think that the ―e‖ meant ―electronic.‖
28
Id. Here, however, the electronic media does not affect ―s‖ like what
was seen in Visa. Instead, the ―s‖ is unaffected by the electronic
media,
weakening
Fourteenth
any
Circuit
similarities
erred
when
between
it
failed
the
to
subject
note
marks.
this
The
contextual
effect.
But this ―s‖ is just one of the mark‘s parts. When analyzing
marks‘ similarities, every part is a ―relevant factor[]‖ under 15
U.S.C. § 1125(c)(2)(B). Starbucks, 588 F.3d at 107. In Starbucks, the
court concluded that common parts are as important as unique ones. Id.
Indeed,
consumers
do
not
sever
marks‘
characteristics,
so
courts
should not. In the case at bar, the Fourteenth Circuit erred when it
severed
the
marks,
refusing
to
include
the
―.com,‖
or
Chatnoir‘s
―Media,‖ ―Lite,‖ or ―Pro.‖ When considering these components, along
with the ―s,‖ the marks have minimal similarity.
2. Under the second factor, Chatnoir’s marks do not have inherent
distinctiveness,
and
have
a
low-degree
of
acquired
distinctiveness, lessening any similarities between the subject
marks.
In trademark law, ―distinctiveness‖ is the ability of a mark to
distinguish its products coming from one source from products coming
from other sources. Amazing Spaces, Inc. v. Metro Mini Storage, 608
F.3d at 225, 236 (5th Cir. 2010). The more distinct a mark, the more
protection it deserves. TCPIP Holding Co., Inc. v. Haar Communs. Inc.,
244 F.3d 88, 93 (2d Cir. 2001), overruled on other grounds, 15 U.S.C.
§ 1125(c).
There
are
four
categories
of
distinctiveness,
from
unprotected to most protected: generic; descriptive; suggestive; and
arbitrary
or
fanciful.
Id.
This
analysis
29
originated
for
trademark
infringement purposes, but courts use it for blurring analysis. See
id. at 93-95. In doing so, the second factor requires focusing on the
degree
of
distinctiveness.
Other
factors‘
strengths
or
weaknesses
affect the degree of distinctiveness. See Perfumebay, 506 F.3d at
1165. Because the first factor favors Runaway Scrape, Chatnoir‘s marks
would need to have high degrees of distinctiveness; however, they do
not.
Chatnoir‘s
marks
are
not
arbitrary,
fanciful
or
suggestive
because they describe a quality or characteristic of their respective
products. R. 3-4. Therefore, they are not inherently distinctive, and
are at best descriptive. As descriptive marks, they have a low degree
of
acquired
distinctiveness
because
they
have
a
low
degree
of
secondary meaning.
A.
Chatnoir’s marks are at best descriptive.
Arbitrary
marks
consist
of
common
words,
but
when
used
in
connection with the products neither suggest nor describe something
about them. King of the Mt. Sports, Inc. v. Chrysler Corp., 185 F.3d
1084, 1093 (10th Cir. 1999). ―Camel‖ cigarettes is an example. WalMart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210 (2000).
Fanciful marks use words invented for the sole purpose of being a
trademark.
Chrysler
Corp.,
185
F.3d
at
1093.
―Kodak‖
film
is
an
example. Samara Bros., 529 U.S. at 210.
Here, Chatnoir‘s marks contain a common word, ―aardvark,‖ that
neither suggests nor describes something about its products. However,
the
marks
also
contain
descriptive
30
words
of
the
products
they
identify. Because all components of a mark are ―relevant factors‖
within § 1125(c)(2)(B), Starbucks, 588 F.3d at 107, the marks‘ parts
that describe the products should be considered. Therefore, they are
not arbitrary. In addition, these words are not fanciful because they
were not ―coined‖ or invented solely to be a trademark.
At most, they
are descriptive. Descriptive marks ―describe a
product or its attributes.‖ TCPIP, 244 F.3d at 93. An example is
―American Airlines.‖ Id. at 96. Here, Chatnoir‘s marks are descriptive
because of the words ―Media,‖ ―Pro,‖ and ―Lite‖ in the respective
marks.
These
Chatnoir
parts
argues
are
that
essential
―aardvark‖
to
identify
each
is
arbitrary,
product.
that
While
argument
is
incorrect because, for distinctiveness inquiries, marks are considered
as a whole. Advertise.com v. AOL Advertising, Inc., 616 F.3d 974, 978
(9th Cir. 2010). Moreover, trademarks identify products. Without the
―Media,‖ ―Pro‖ or ―Lite,‖ these marks would not do so, and cease to be
marks.
B. Chatnoir’s marks have a low degree of secondary meaning.
As descriptive marks, they have a low degree of distinctiveness.
Descriptive marks acquire distinctiveness with ―secondary meaning,‖
which occurs when a mark reminds consumers of a product‘s source.
Samara Bros., 529 U.S. at 1343. Different circuits use different tests
to assess secondary meaning, see e.g. Sunbeam Prods., Inc. v. W. Bend
Co., 123 F.2d 246, 253-54 (5th Cir. 1997); St. Luke’s Cataract and
Laser Inst., PA v. Sanderson, 573 F.3d 1186, 1209 (11th Cir. 2009),
but
this
Court
has
said
that
survey
evidence
gauging
public
association of a mark with its source is, by itself, enough. Two
31
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 770-71 (1992)(Fifth
Circuit‘s use of only survey evidence to find secondary meaning was
―sound‖). Indeed, if secondary meaning is public association of a mark
with
its
source,
survey
evidence
is
the
best
evidence
of
that
association. Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co., 791 F.2d
423, 427 (5th Cir. 1986). The Sno-Wizard Court held that secondary
meaning was not established by a survey showing 16% of non-users of a
dessert machine associated it with its source, even though as many as
84% of users did. Id.
Here, any such
association is even less. Although
Chatnoir‘s
surveys focused on association between the subject marks instead of
association of its marks with their sources, that latter association
can be gleaned from them. When asked what came to mind upon hearing
―aardvarks,‖
only
2%
of
the
public
said
Chatnoir.
R.
15.
This
indicates that only 2% of people, which includes Aardvark Media users,
associated Chatnoir with its marks‘ most distinct component. Given
this
low
figure,
Chatnoir‘s
marks
have
acquired
a
low
degree
of
secondary meaning, if any at all.
3. The Fourth, Fifth and Sixth Factors favor Runaway
outweighing the Third Factor, which favors Chatnoir.
Scrape,
The third factor is how exclusively the senior mark is being
used. Although there was no evidence presented at trial to show that
its
marks‘
are
used
elsewhere,
this
factor
does
not
outweigh
the
others. For instance, the fourth factor, the degree of recognition of
the
mark,
favors
Runaway
Scrape.
A
mark‘s
degree
of
recognition
concerns the percentage of the public that knows of the senior mark,
32
Visa, 590 F.Supp. at 1318; 7-Eleven, Inc. v. Weschler, 2007 WL 1431084
at *9, 17 (U.S. Trademark Tr. & App. Bd. May 15, 2007), and the
duration
and
intensity
of
the
mark‘s
use,
see
Starbucks
Corp.
v.
Wolfe’s Borough Coffee, Inc., 559 F. Supp. 2d 472, 477-78 (S.D.N.Y.
2008), vacated on other grounds, Starbucks, 588 F.3d at 109-10. In
Visa, this factor favored plaintiff because surveys showed 99% of
respondents were aware of the VISA brand, and 85% identified VISA when
asked to think of companies offering credit card services. 590 F.Supp.
2d at 1318. In the Starbucks trial, this factor favored plaintiff
because it had used it marks for over 30 years and in thousands of
stores worldwide. 559 F. Supp. 2d at 477-78.
In the case at bar, surveys do not favor Chatnoir, nor has its
marks
been
used
for
a
lengthy
time,
or
intensely.
As
previously
established, only 2% of the public and 8% of Chatnoir users associated
Runaway Scrape‘s marks with Chatnoir. R. 15. By simple deduction, if
Chatnoir‘s marks had a high degree of recognition, such association
would be more substantial. Moreover, duration does not favor Chatnoir.
Aardvark Media was used for four years before the trial started, and
the other marks for mere months. R. 3, 5. Also, there is no evidence
that
Chatnoir‘s
evidence
products
indicates
a
low
are
sold
degree
of
outside
of
recognition
its
website.
under
the
Such
fourth
factor.
In addition, the
fifth factor,
whether defendant
intended to
associate with plaintiff‘s mark, favors Runaway Scrape. The Fourteenth
Circuit
concluded
that
it
favored
33
Chatnoir
because
of
the
song
―Aardvarks‖ and a link on aardvarks.com that read ―Get it the right
way,‖ reading it as a reference to this lawsuit. R. at 15. But this
factor focuses on ―whether the junior user believes it can benefit
commercially‖ from association with the senior mark. Mead Data C.,
Inc. v. Toyota Motor Sales, 875 F.2d 1026, 1037 (2d Cir. 1989)(Sweet,
J., concurring). After all, one of trademark law‘s main concerns is to
prevent the siphoning of profit from deserving companies. See Ty, 306
F.3d at 510. But Runaway Scrape launched aardvarks.com to combat music
bootlegging, R. 7, not to siphon profit. Moreover, Chatnoir has not
lost profit. At most, its lost users who downloaded its free software
to obtain music illegally. But illegal music is appealing because it
is free. This appeal is lost by having to buy Chatnoir‘s products.
Finally, the sixth factor, any actual association between the
subject
marks,
also
favors
Runaway
Scrape.
Courts
rely
on
survey
evidence to find actual association, see e.g. Starbucks, 588 F.3d at
109; Nike, Inc. v. Nikepal Intl., Inc., 2007 U.S. Dist. LEXIS 66686
*24 (E.D. Cal. Sept. 10, 2007). For instance, in Jada Toys, Inc. v.
Mattel, Inc., the Ninth Circuit concluded that this factor favored the
plaintiff-appellee because one survey showed that 28% of respondents
associated the defendant‘s toy cars with the plaintiff, and 7% in
another associated the plaintiff with defendant‘s marks. 518 F.3d 628,
636 (9th Cir. 2007). However, there was a high degree of similarity
between the subject marks because both used the word ―hot,‖ a flame,
and similar colors. Id. at 635. In addition, these marks identified
the same type of product. Id. at 631. Here, however, the subject marks
34
have
a
low
degree
of
similarity
and
identify
different
types
of
products. Given these differences from the marks in Jada Toys, higher
percentages should be required. The Fourteenth Circuit concluded that
because a mere 8% of Chatnoir users and 2% of the general public
thought
―aardvarks‖
referred
to
Chatnoir,
there
was
actual
association. R. at 15. But this evidence is too slight, considering
the relative dissimilarity between the subject marks.
To hold that this nominal showing of actual association favors
Chatnoir, this Court would have to interpret the sixth factor broadly.
But
equipping
powerful
companies
with
a
liberally-interpreted
TDRA
will prevent new marks from getting needed marketplace exposure. This
will cause the public its own cumulative injury, akin to ―‗being stung
by
a
hundred
(quoting
J.
bees,‘‖
Thomas
Abdel-khalik,
McCarthy,
89
McCarthy
U.
on
Toledo
L.
Rev.
Trademarks
and
at
592
Unfair
Competition, § 24:120 (4th ed. 1996)), where each sting will be a
different case, based on this one, and where each whittles away a
vibrant marketplace.
CONCLUSION
Wherefore, petitioner, Runaway Scrape, respectfully requests that
this Court reverse the judgment of the United States Court of Appeals
for the Fourteenth Circuit and remand for further proceedings.
Respectfully Submitted,
______________________________
Team 75, Counsel for Petitioner
35
APPENDIX
1.
17 U.S.C. § 106 (2006), Exclusive rights in copyrighted works,
provides:
Subject to sections 107 through 122, the owner of copyright under
this title has the exclusive rights to do and to authorize any of the
following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work
to the public by sale or other transfer of ownership, or by
rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic
works, pantomimes, and motion pictures and other audiovisual
works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic
works, pantomimes, and pictorial, graphic, or sculptural works,
including the individual images of a motion picture or other
audiovisual work, to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the copyrighted
work publicly by means of a digital audio transmission.
2.
17 U.S.C. § 1125 (2006), False designation of origin, false
descriptions, and dilution forbidden, provides in pertinent part:
(a) Civil Action
(1) Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any word,
term, name, symbol, or device, or any combination thereof, or any
false designation of origin, false or misleading description of
fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or
to deceive as to the affiliation, connection, or
association of such person with another person, or as to
the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person . . .
shall be liable in a civil action by any person who believes that
he or she is or is likely to be damaged by such act.
A-1
(c) Dilution by Blurring
(1) Injunctive relief. Subject to the principles of equity, the
owner of a famous mark that is distinctive, inherently or through
acquired distinctiveness, shall be entitled to an injunction
against another person who, at any time after the owner's mark
has become famous, commences use of a mark or trade name in
commerce that is likely to cause dilution by blurring . . . of
the famous mark, regardless of the presence or absence of actual
or likely confusion, of competition, or of actual economic
injury.
(2)(B) Definitions. For purposes of paragraph (1), ―dilution by
blurring‖ is association arising from the similarity between a
mark or trade name and a famous mark that impairs the
distinctiveness of the famous mark. In determining whether a mark
or trade name is likely to cause dilution by blurring, the court
may consider all relevant factors, including the following:
(i) The degree of similarity between the mark or trade
name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of
the famous mark.
(iii) The extent to which the owner of the famous mark is
engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to
create an association with the famous mark.
(vi) Any actual association between the mark or trade name
and the famous mark.
A-2